The Complainant is Nilfisk-Advance A/S of Denmark, represented internally.
The Respondent is Mark van dam of Switzerland / Domains by Proxy, Inc. of United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on April 28, 2011. On April 29, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On May 3, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy” or ”UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the ”Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2011.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on June 1, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The first trademark registration of Nilfisk-Advance A/S is dated November 26, 1910. The Complainant has approximately 380 trademark registrations in different countries.
Some of these registrations are:
TRADEMARK
REG. NO.
Country code
DATE OF REGISTRATION
Classes
NILFISK CFM
3547171
US
December 16, 2008
7
NILFISK ALTO
3107063
US
June 20, 2006
7
NILFISK
3117312
US
July 18, 2006
7
NILFISK EXTREME
3055554
US
January 31, 2006
7
NILFISK ADVANCE
2364078
US
July 4, 2000
7,37
NILFISK COMPACT
2816105
US
February 24, 2004
7
NILFISK
0695570
US
April 5, 1960
9
The disputed domain name was registered on November 11, 2010. 5. Parties’ Contentions A. Complainant
The Complainant argued the following:
1. The Domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
-That the disputed domain name is confusingly similar to the registered trademark NILFISK because the dominant part of the disputed domain name is identical to the registered trademark.
-That the addition of “vacuumcleaners” is not relevant when discussing the similarity between the domain name and the trademark, because said addition has no impact on the overall impression of the comparison between the Complainant’s trademark NILFISK and the disputed domain name, because said addition is generic, in particular in relation to the products branded under NILFISK.
- That the Complainant’s trademark registrations predate the registration of the disputed domain name: That NILFISK has existed as a trademark since 1960 in Denmark whereas the disputed domain name was registered in 2010.
- That the Complainant has registered the domain name containing a term “nilfisk” in 80 country level variants, and term “nilfisk” in combination with other elements in approximately 370 variants, altogether 450 domain names containing the trademark NILFISK.
2. The Respondent has no rights or legitimate interests in respect of the domain name
-That the Complainant is a worldwide manufacturer of household, commercial and professional cleaning machines and equipment ranging from household vacuum cleaners, all kinds of scrubber/dryers to road sweepers.
-That Respondent has no rights in the registered trademark NILFISK, nor any legitimate interests in the disputed domain name.
-That the disputed domain name resolves to a “pay-per-click” website, linking to competitors’ products such as Electrolux.
-That the Respondent and the Complainant have no business relations. That the Complainant has never allowed or authorized the Respondent to register and use domain names containing the Complainant’s trademark NILFISK.
-That it seems unlikely that the Respondent by using the disputed domain name has an intention to a bona fide offering of goods or services related to the trademark NILFISK.
-That the Respondent does not seem to make a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark NILFISK.
3. The domain name was registered and is used in bad faith
The Complainant alleges that the disputed domain name was registered and is used by the Respondent in bad faith.
The Respondent was also involved in several similar cases concerning NILFISK trademark, it seems unlikely that they were not aware of the Complainant prior rights in NILFISK.
The Complainant claims that the use of the disputed domain name by the Respondent is an intentional attempt to attract, for commercial gain, Internet users to their websites or other online locations, by creating a likelihood of confusion with the trademark NILFISK as to the source of a product or service. A kind of hidden advertising where the money is earned by clicking, but where the Respondent gain from the brand value of NILFISK.
-That the Complainant contacted the Respondent on November 23, 2010, concerning the disputed domain name, and sent a reminder on December 14, 2010. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a Complaint “on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
As there has been no response, the Panel may also accept as true the factual allegations in the Complaint; see for example ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s trademark NILFISK because said domain name entirely incorporates the Complainant’s mark. The only variations are the addition of the terms “vacuum” and “cleaners”, and the genric top-level domain (gTLD) “.org”.
Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See for example: Bayerische Motoren Werke AG v. , WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA,WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047; Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802.
The addition of the descriptive terms “vacuum” and “cleaners” does not confer a distinctive character to the disputed domain name, in relation to Complainant’s trademark. See America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004; MoneyGram Payment Systems Inc. v. Elizabeth Muriel Hernández,WIPO Case No. D2006-1506; Princess International Sales and Service Limited and Princess Yachts International PLC v. Lambert and Turner/Lambert Turner Marine,WIPO Case No. D2002-0419 and America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713.
The addition of the generic top-level domain “.org” is immaterial for purposes of the Policy. To carry into effect the similarity analysis, a panel must not take into account the generic top-level domain (gTLD) “.org”, because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859 (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell,WIPO Case No. D2000-0300, J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing,WIPO Case No. D2000-0035; see also Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409).
The Panel finds that the domain name is confusingly similar to the Complainant’s trademark. The first requirement of the Policy has been fulfilled. B. Rights or Legitimate Interests
The following are examples of circumstances where a respondent may have rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (Policy, paragraph 4(c)).
There is no evidence in this case showing that the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services. According to the evidence filed by the Complainant, and undisputed by the Respondent, said Respondent is diverting traffic to at least one of the Complainant’s competitors, for commercial gain. Such use does not of itself give rise to the Respondent having any rights or legitimate interests in respect of the disputed domain name. (See Mr. Olympia, LLC, American Media Operations, Inc., International Federation of BodyBuilders v. Tim Harrington, WIPO Case No. D2005-1287; Societe des Hotels Meridien v. Modern Limited - Cayman Web Development, WIPO Case No. D2004-0321; See also, Lilly ICOS LLC v. Self, WIPO Case No. D2005-1099; Lilly ICOS LLC v. Cybernet Marketing/Antoine Tardif, WIPO Case No. D2006-1123; Sanofi-aventis v. Brian Kleiner, Registered Agent,WIPO Case No. D2007-0982).
Evidence provided by the Complainant shows that use of the disputed domain name is commercial, and that it constitutes an intent for commercial gain to misleadingly divert consumers (See Hoffmann-La Roche Inc. v. O, WIPO Case No. D2007-1806; Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; The Bear Stearns Companies Inc. v. Darryl Pope,WIPO Case No. D2007-0593; COMSAT Corporation v. Ronald Isaacs,WIPO Case No. D2004-1082; Fat Face Holdings Ltd. v. Belize Domain WHOIS Service Ltd.,WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd.,WIPO Case No. D2006-1079).
Furthermore, the Respondent has not filed any evidence showing that the Respondent has been commonly known as .
Therefore, this Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name . The second requirement of the Policy has been fulfilled. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Based on the evidence submitted by the Complainant, which has not been rebutted by the Respondent, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site, by creating a likelihood of confusion with the Complainant’s trademark, in connection with at least one competitor of the Complainant. This conduct falls within the scope of paragraph 4(b)(iv) of the Policy (See Hewlett-Packard Company v. NA, NAF Claim No. FA154141; Savin Corporation v. Cal Toner c/o Domain Manager, NAF Case No. 230934; State Fair of Texas v. G, NAF Claim No. FA95288).
This Panel finds that the disputed domain name has been registered and is being used in bad faith, in accordance with the Policy. The third requirement of said Policy has been met. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Kiyoshi Tsuru
Sole Panelist
Dated: June 15, 2011
Full & Egal Universal Law Academy